Ex Parte 7,922,614 B2 et alDownload PDFPatent Trial and Appeal BoardMay 19, 201690012374 (P.T.A.B. May. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 90/012,374 06/22/2012 7,922,614 B2 27526 7590 05/19/2016 HUSCH BLACKWELL LLP 4801 Main Street Suite 1000 KANSAS CITY, MO 64112 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 469506.10026 8487 EXAMINER GRAHAM, MATTHEW C ART UNIT PAPER NUMBER 3993 MAILDATE DELIVERY MODE 05/19/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CP PACKAGING, LLC Appellant, Third Party Requester1 v. Patent ofMULTIVAC, INC. Respondent, Patent Owner Appeal2015-008274 Inter partes Reexamination Control 95/002,200 Ex parte Reexamination Control 90/012,374 Patent US 7,922,614 B22 Technology Center 3900 Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and JON ivL JURGOV AN, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL CP Packaging, LLC, of Appleton, Wisconsin is the real party in interest. CP Packaging is also identified as the Third Party Requester in the "Request for Inter partes Reexamination," dated September 12, 2012, in Reexamination Control Number 95/002,220. 2 Issued April 12, 2011 to Ivo Ruzik and Elmar Ehrman (the '"614 patent"). The '614 patent issued from Appl. 11/990, 186. Pages 1 and 2 of the "Patent Owner's Respondent Brief," dated October 30, 2014, identifies stayed litigation involving the '614 patent. Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 STATEMENT OF THE CASE 2 This is an appeal from a merged reexamination proceeding combining 3 Inter partes Reexamination Control 95/002,200 and Ex parte Reexamination 4 Control 90/012,374. The Appellant/Third Party Requester appeals from the 5 Examiner's decision favorable to the patentability of amended claims 1 and 6 5-7; and newly-added claims 21, 23 and 24. ("Appellant and Third Party 7 Requester CP Packaging's Appeal Brief," dated September 11, 2014 8 ("Appeal Brief' or "App. Br. Req'r"), at 9-10). Because this merged 9 proceeding includes an inter partes reexamination requested prior to 10 September 16, 2012, we have jurisdiction under pre-AIA 35 U.S.C. § 134(c) 11 and 35 U.S.C. § 315(b). See Leahy-Smith America Invents Act, PL 112-29, 12 125 Stat. 284, §§ 6(c)(2)(A) and 7(e)(2). 13 14 RECORD ON APPEAL 15 The Examiner's findings, conclusions, and decision may be found in a 16 "Right of Appeal Notice," mailed June 17, 2014 ("RAN"). 3 The Requester 1 7 relies on its Appeal Brief and an "Appellant and Third Party Requester CP 18 Packaging's Rebuttal Brief," dated January 20, 2015 ("Rebuttal Brief' or 19 "Reb. Br. Req'r"). In addition to the prior art of record, the Requester 20 presents a Declaration of Raymond G. Buchko, executed June 12, 2013 21 ("Buchko Deel."). The Patent Owner relies on a "Patent Owner's 22 Respondent Brief," dated October 30, 2014 ("Respondent Brief' or "Resp. 3 The Examiner's Answer mailed December 19, 2014 incorporates the RAN by reference. 2 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Br. PO"). Both the Requester and the Patent Owner participated in an oral 2 argument held on April 13, 2015. 3 Only issues and findings of fact addressed by the Requester or the 4 Patent Owner in their respective briefs have been considered. See 37 C.F.R. 5 § 41.67(c)(l)(vii); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). In 6 particular, we address only those proposed grounds of rejection listed on 7 pages 9 and 10 of the Requester's Appeal Brief, as these are the only 8 proposed grounds of rejection argued in the briefs. Any grounds of rejection 9 proposed during the hearing but not addressed in the briefs, as well as any 10 evidence first proffered at the hearing, has not been considered. See 3 7 11 C.F.R. § 41.73(e)(l). 12 13 GROUNDS OF REJECTION AND DISPOSITION 14 We REVERSE the Examiner's decision favorable to the patentability 15 of claims 1, 21 and23. Pursuant to 37 C.F.R. § 41.77(b), we enter new 16 grounds of rejection against independent claims 1, 21and23 under pre-AIA 17 35 U.S.C. § 102(e) as being anticipated by Buchko (US 7,575,114 B2, 18 issued Aug. 18, 2009). 19 We do not reach the proposed rejections of claims 1, 21 and 23 under 20 pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Buchko in view of 21 either Natterer (US 4,601,421, issued July 22, 1986) or Hamilton (US 22 3,524,298, issued Aug. 18, 1870); alone or further in view of either Webster 23 (US 6,896,125 B2, issued May 24, 2005), Petershack (US 4,353,459, issued 24 Oct. 12, 1982), Case (US 2,971,392, issued Feb. 14, 1961), Casgrain (US 25 538,895, issued May 7, 1895) or St. Louis (US 389, 173, issued Sept. 4, 26 1888); once again, alone or even further in view of Weisgerber (US 3 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 5,056,773, issued Oct. 15, 1991); Frenker-Hackfort (US 4,747,261, issued 2 May 31, 1988); Strickland (US 4,082,007, issued Apr. 4, 1978) or 3 Wolfelsperger (US 3,610,501, issued Oct. 5, 1971). 4 We AFFIRM the Examiner's decision not to adopt the proposed 5 rejections of dependent claims 5-7 and 24 under§ 103(a) as being 6 unpatentable over Buchko in view of either Natterer or Hamilton; alone or 7 further in view of either Webster, Petershack, Case, Casgrain or St. Louis; 8 once again, alone or even further in view of Weisgerber; Frenker-Hackfort; 9 Strickland or W olfelsperger. 10 We also AFFIRM the Examiner's decision not to adopt the proposed 11 rejections of independent claims 1, 5-7, 21, 23 and 24 under§ 103(a) as 12 being unpatentable over Spada (US 5,564,556, issued Oct. 15, 1996) in view 13 of either Natterer or Hamilton; alone or further in view of either Webster, 14 Petershack, Case, Casgrain or St. Louis; once again, alone or even further in 15 view of Weisgerber; Frenker-Hackfort; Strickland or Wolfolsperger. 16 We also AFFIRM the Examiner's decision not to adopt the proposed 17 rejections of claims 23 and 24 under pre-AIA 35 U.S.C. § 112, either under 18 the first paragraph for failure to comply with the written description 19 requirement or under the second paragraph for indefiniteness. 20 21 THE '614 PATENT 22 The '614 patent teaches a packaging machine 2 5 such as a 23 thermoforming machine for wrapping comestibles in a packaging film 29. 24 The packaging machine 2 5 includes a link chain 31 with grippers for 25 gripping the packaging film; drawing the film off of a roll; and transporting 26 the packaging film to a processing station. ('614 patent, col. 1, 11. 8-18 & 4 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 38--41; col. 5, 11. 11-21; & Fig. 9). The '614 patent also teaches that the 2 articulations between individual rigid links of prior art chains formed gaps 3 that collected dirt and were difficult to clean. The articulations between the 4 links also required lubrication. The combination of collected dirt and 5 lubrication interferes with efforts to maintain the level of hygiene necessary 6 to safely package comestibles. ('614 patent, col. 1, 11. 19-34). The '614 7 patent addresses the problem by providing a chain of alternating rigid chain 8 links and flexible chain links, with grippers that are included with the rigid 9 links. ('614 patent, col. 1, 11. 42-59). 10 Claims 1, 21 and 23 are independent. Claim 1 recites: 11 1. A packaging machine having a chain for transport 12 of a film material, 13 wherein the chain has a series of successive rigid chain 14 links, connected to one another in a movable manner, and 15 flexible chain links provided between the rigid chain links, the 16 flexible chain links being fixed to the rigid chain links, 17 wherein one or more of the rigid chain links include 18 clamping units for clamping the packaging film wherein the 19 packaging film is in a substantially horizontal plane, 20 wherein a plurality of the rigid chain links further 21 comprising one or more downwardly extending guide elements 22 for resisting movement of the chain and the clamped packaging 23 film material in a direction transverse to a direction of travel of 24 the chain, and 25 the packaging machine having a guide rail 26 wherein said guide elements engage said guide rail. 27 (App. Br. Req'r Al.I). 5 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 FINDINGS OF FACT 2 Buchko describes a linear motion reciprocating vacuum packaging 3 system 100. The system 100 includes a conveyor 102 and evacuation 4 chambers 106a, 106b, 106c. (See Buchko, col. 3, 1. 66 - col. 4, 1. 4; col. 4, 5 11. 29-31; & Fig. 3). The conveyor 102 includes a flexible conveyor belt 218 6 wrapped around pulleys 212, 214. One of the two pulleys 212, 214 is driven 7 to move the conveyor belt below the evacuation chambers 106a, 106b, 106c. 8 (See Buchko, col. 6, 11. 16-23). The flexible conveyor belt 218 may be 9 either single-sectioned or multi-sectioned. (See Buchko, col. 6, 11. 43--46). 10 Clamps 220 secured to the flexible belt serve three purposes. (See 11 Buchko, col. 8, 11. 39--46 & 49-51). One purpose of the clamps 220 is to 12 tighten the flexible conveyor belt 218 around the pulleys 212, 214. (See 13 Buchko, col. 6, 11. 43-55). A second purpose of the clamps 220 is to mount 14 platens 108, on which pre-filled bags of comestibles are conveyed. (See 15 Buchko, col. 2, 11. 1-7; col. 18, 11. 7-21; and Figs. 3, 16 & 17). Each platen 16 108 is fastened to one of the clamps 220 (see Buchko, col. 7, 1. 63 - col. 8, 1. 17 7), such that the clamps and the platens combine to form integral, rigid 18 bodies (see, e.g., Buchko, Figs. 16 & 18). A third purpose ofBuchko's 19 clamps 220 is to splice sections of a multi-sectioned flexible conveyor belt 20 218 together. (See Buchko, col. 6, 11. 36--42 & col. 8, 11. 49-59). As a 21 consequence, each section of the multi-sectioned flexible conveyor belt 218 22 is provided between a pair of the rigid clamps 220; and each section of the 23 belt is fixed to a clamp at each of the two ends of the section. Buchko does 24 not appear to describe the materials from which the flexible conveyor belt 25 218 and the clamps 220 are made. 6 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Each of Buchko' s platens 108 includes platen guide blocks 2 68 2 attached to a front end and a back end of a bottom surface of the platen. 3 Each platen guide block defines a slot 270. The support frame 110 of the 4 system 100 mounts a pair of guide rails 2 7 2. The guide rails 2 7 2 engage the 5 slots 270 in the platen guide blocks 268 to restrain the platens 108 to travel 6 in a straight line along the length of the system 100 for engagement with the 7 evacuation chambers 106a, 106b, 106c. (See Buchko, col. 8, 11. 10-19 & 8 Figs. 14 & 16). 9 Each of Buchko' s platens 108 also includes a clamp and seal member 10 278 rigidly attached to a top surface of the platen by fasteners 282. (See 11 Buchko, col. 8, 11. 32-38). During a packaging operation, the platens 108 12 position pre-filled plastic bags containing comestibles under the evacuation 13 chambers 106a, 106b, 106c. (See Buchko, col. 18, 11. 7-16). When one of 14 the evacuation chambers 106a, 106b, 106c pivots downwardly onto one of 15 the platens 108, the evacuation chamber and the platen cooperate to form an 16 evacuated space around the bag. (See Buchko, col. 18, 11. 34--43). The 1 7 vacuum drawn in this evacuated space draws any air from the bag. 18 When one of the evacuation chambers 106a, 106b, 106c pivots 19 downwardly onto one of the platens 108, an upper bag clamp member 710 20 mounted within the evacuated space presses the open end of the bag against 21 the clamp and seal member 2 82 of the platen 108. As such, the clamp and 22 seal member 278 is designed for clamping the plastic film at the open end of 23 the bag in place on the platen 108. (See Buchko, col. 17, 11. 22-28 & Fig. 24 41 ). While the film at the open end of the bag is clamped in place on the top 25 surface of the platen 108, a heated seal bar 552 and a knife 556 act against 26 the clamp and seal member 278 to seal the bag and trim any excess film 7 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 from the sealed end. (See Buchko, col. 16, 11. 16-24; col. 18, 11. 43-50; & 2 Figs. 42 & 43). 3 4 Spada 5 Spada describes a conveyor device 2 for use in forming ordered 6 groups of cigarettes in a cigarette packaging machine. (See Spada, col. 2, 11. 7 62-67). The conveyor device 2 includes a continuous conveyor belt 3 8 mounted for continuous travel about two pulleys 4, 5. The conveyor belt 3 9 mounts a plurality of tubular housings 6 at equal intervals along the belt. 10 The housings 6 have hollow interiors of rectangular cross-section. During 11 operation, the conveyor belt 3 positions each housing under a hopper outlet 12 1, 1 ', 1 ". That housing 6 receives a group of cigarettes from the hopper 13 outlets 1, 1 ', 1" and arranges the group of cigarettes into rectangular stacks. 14 When the conveyor belt 3 transports the filled housing 6 to an extraction 15 station near a downstream pulley 5, that housing feeds the group of 16 cigarettes to another mechanism, which wraps the group of cigarettes. (Id.; 17 see also Spada, col. 3, 11. 12-28 and Fig. 1 ). 18 19 NEW GROUNDS OF REJECTION AGAINST CLAIMS 1, 21, 23 AND 24 20 Claim 1 21 Buchko describes a "packaging machine," that is, a linear motion 22 reciprocating vacuum packaging system 100 for evacuating, sealing and 23 trimming pre-filled bags of comestibles, satisfying the limitations of 24 independent claim 1. (See Buchko, col. 1, 11. 13-16; col. 3, 1. 66- col. 4, 25 1. 4; & col. 4, 11. 9-16; see also App. Br. Req'r 13 & 21 ). 8 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Buchko describes a "packaging machine having a chain for transport 2 of a packaging film material, wherein the chain has a series of successive 3 rigid chain links, connected to one another in a movable manner, and 4 flexible chain links provided between the rigid chain links." Buchko' s 5 system 100 has a conveyor 102 including a flexible conveyor belt 218. (See 6 Buchko, col. 6, 11. 20-23). More specifically, Buchko describes a multi- 7 sectioned flexible conveyor belt 218 formed from sections coupled together 8 by clamps 220. (See Buchko, col. 6, 11. 36--42 & col. 8, 11. 49-59). A platen 9 108 is fastened to each clamp 220 such that the combination is an integral, 10 rigid body. (See Buchko, col. 7, 1. 63 - col. 8, 1. 7 & Figs. 16 & 18). In this 11 arrangement, the chain comprises a series of successive rigid chain links, 12 each such link taking the form of a clamp 220 and a platen 108 fastened 13 integrally with the clamp; and flexible chain links taking the form of 14 sections of the flexible conveyor belt 218. (See App. Br. Req'r 13). The 15 flexible chain links, that is, the sections of the flexible conveyor belt 218, are 16 fixed, that is, clamped, at their ends to the rigid chain links by means of the 17 clamps 220. 18 Buchko describes "wherein one or more of the rigid chain links 19 include clamping units for clamping the packaging film wherein the 20 packaging film is in a substantially horizontal plane." Buchko also describes 21 "wherein a plurality of the rigid chain links further compris[ e] one or more 22 downwardly extending guide elements for resisting movement of the chain 23 and the clamped packaging film material in a direction transverse to a 24 direction of travel of the chain." Each rigid chain link includes a platen 108. 25 Each platen 108 includes a clamping unit taking the form of a clamp and 26 seal member 278 for clamping the packaging film at the open end of a bag in 9 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 a plane defined by the top surface of the clamp and seal member. (See 2 Buchko, col. 8, 11. 32-38; col. 17, 11. 22-28; & Fig. 41). Each platen 108 3 also includes downwardly extending guide elements taking the form of 4 platen guide blocks 268 for resisting movement of the chain (and of a bag 5 carried by the chain) transverse to the length of the system 100. (See 6 Buchko, col. 8, 11. 10-19 & Figs. 14 & 16). Therefore, each rigid chain link, 7 namely, each combination of a clamp 220 and a corresponding platen 108, 8 includes a clamping unit taking the form of a clamp and seal member 278; 9 and guide elements taking the form of platen guide blocks 268. (See App. 10 Br. Req'r 13-14). 11 Finally, Buchko describes "the packaging machine having a guide rail 12 wherein said guide elements engage said guide rail." Buchko' s system 100 13 includes guide rails 272 that engage slots 270 in the platen guide blocks 268 14 to restrain transverse movement of the chain and the bags carried by the 15 platens 108. (See Buchko, col. 8, 11. 10-19 & Figs. 14 & 16; see also App. 16 Br. Req'r 14). 17 18 Claim 21 19 Buchko also describes a "packaging machine" satisfying the 20 limitations of independent claim 21. (See Buchko, col. 1, 11. 13-16; col. 3, 1. 21 66- col. 4, 1. 4; & col. 4, 11. 9-16; see also App. Br. Req'r 13 & 21). 22 Buchko describes a "packaging machine having a chain for 23 transporting a food packaging film, wherein the chain has a series of 24 successive rigid chain links connected to one another in a movable manner, 25 and flexible chain links provided between the rigid chain links and ... fixed 26 to the rigid chain links." As discussed earlier, Buchko's system 100 has a 10 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 conveyor 102 including a flexible conveyor belt 218. (See Buchko, col. 6, 11. 2 20-23). More specifically, Buchko describes a multi-sectioned flexible 3 conveyor belt 218 formed from sections coupled together by clamps 220. 4 (See Buchko, col. 6, 11. 36--42 & col. 8, 11. 49-59). A platen 108 is fastened 5 to each clamp 220 such that the combination is an integral, rigid body. (See 6 Buchko, col. 7, 1. 63 - col. 8, 1. 7 & Figs. 16 & 18). In this arrangement, the 7 chain comprises a series of successive rigid chain links, each such link 8 taking the form of a clamp 220 and a platen 108 fastened integrally with the 9 clamp; and flexible chain links taking the form of sections of the flexible 10 conveyor belt 218. (See App. Br. Req'r 13). The flexible chain links, that 11 is, the sections of the flexible conveyor belt 218, are provided between the 12 rigid chain links and are fixed, that is, clamped, at their ends to the rigid 13 chain links by means of the clamps 220. 14 Buchko also describes "the packaging machine further comprising a 15 guide rail." The frame 110 of Buchko' s system 100 mounts guide rails 2 7 2. 16 (See Buchko, col. 8, 11. 10-15 & Fig. 16). 1 7 Buchko describes "wherein at least some of the rigid chain links 18 include ... clamping unit[ s ], for clamping the packaging film." Buchko also 19 describes "wherein at least some of the rigid [chain] links hav[ e] a pair of 20 downwardly extending legs configured to engage the guide rail to 21 substantially prevent displacement of the chain and the food packaging film 22 in a direction substantially transverse to a direction of travel of the chain." 23 Each rigid chain link includes a platen 108. Each platen 108 includes a 24 clamping unit taking the form of a clamp and seal member 278 for clamping 25 the packaging film at the open end of a bag in a plane defined by the top 26 surface of the clamp and seal member. (See Buchko, col. 8, 11. 32-38; col. 11 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 17, 11. 22-28; & Fig. 41). Each platen 108 also includes downwardly 2 extending guide elements taking the form of platen guide blocks 268. Each 3 platen guide block 268 has a slot 270 so as to define a downwardly 4 extending leg on each side of the slot. (See Buchko, col. 8, 11. 10-15 & Fig. 5 14). The downwardly extending legs surrounding the slots 270 in the guide 6 elements 268 engage the guide rails 272 to substantially prevent 7 displacement of the chain and the food packaging film in a direction 8 substantially transverse to a direction of travel of the chain. (See Buchko, 9 col. 8, 11. 10-19 & Fig. 16; see also App. Br. Req'r 14). Therefore, each 10 rigid chain link, namely, each combination of a clamp 220 and a 11 corresponding platen 108, includes a clamping unit taking the form of a 12 clamp and seal member 278; and downwardly extending legs defined by the 13 platen guide blocks 268. (See App. Br. Req'r 13-14). 14 15 Claim 23 16 Buchko also describes a "packaging machine" satisfying the 17 limitations of independent claim 23. (See Buchko, col. 1, 11. 13-16; col. 3, 1. 18 66- col. 4, 1. 4; & col. 4, 11. 9-16; see also App. Br. Req'r 13 & 21). 19 Buchko describes a "packaging machine having a chain for 20 transporting a food packaging film, ... wherein the chain comprises a 21 continuous flexible traction element and the rigid chain links are clamped on 22 the continuous flexible traction element, wherein the regions of the flexible 23 traction element in-between the rigid chain links are the flexible chain 24 links." As discussed earlier, Buchko's system 100 has a conveyor 102 25 including a flexible conveyor belt 218. (See Buchko, col. 6, 11. 20-23). 26 More specifically, Buchko describes an embodiment in which the flexible 12 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 conveyor belt 218 comprises a continuous flexible traction element, taking 2 the form of a continuous belt with parallel alternating ridges 226 and 3 grooves 228 on an inner side 224 for tractional engagement with the pulleys 4 212, 214. (See Buchko, col. 6, 11. 36--42 & col. 7, 11. 58-62). Clamps 220 5 fasten platens 108 to the flexible conveyor belt 218 at intervals along the 6 belt. (See Buchko, col. 7, 1. 63 - col. 8, 1. 7 & Figs. 16 & 18). Each 7 combination of a clamp 220 and a corresponding platen 108 constitutes one 8 of a plurality of rigid chain links, arranged in a successive series and 9 connected to one another by the flexible conveyor belt 218 in a movable 10 manner. The regions of the flexible conveyor belt 218 in-between the 11 successive clamps 220 and platens 108 constitute flexible chain links 12 provided between, and fixed to, the rigid chain links. 13 Buchko describes "wherein at least some of the rigid chain links 14 include a clamping unit for clamping the packaging film." Buchko also 15 describes "wherein one or more of the rigid chain links further compris[ e] 16 one or more downwardly extending guide elements for resisting movement 1 7 of the chain and the clamped packaging film material in a direction 18 transverse to a direction of travel of the chain." Each rigid chain link 19 includes a platen 108. Each platen 108 includes a clamping unit taking the 20 form of a clamp and seal member 278 for clamping the packaging film at the 21 open end of a bag in a plane defined by the top surface of the clamp and seal 22 member. (See Buchko, col. 8, 11. 32-38; col. 17, 11. 22-28; & Fig. 41). Each 23 platen 108 also includes downwardly extending guide elements taking the 24 form of platen guide blocks 268 for resisting movement of the chain (and of 25 a bag carried by the chain) transverse to the length of the system 100. (See 26 Buchko, col. 8, 11. 10-19 & Figs. 14 & 16). Therefore, each rigid chain link, 13 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 namely, each combination of a clamp 220 and a corresponding platen 108, 2 includes a clamping unit taking the form of a clamp and seal member 278; 3 and guide elements taking the form of platen guide blocks 268. (See App. 4 Br. Req'r 13-14). 5 Finally, Buchko describes "the food packaging machine having a 6 guide rail wherein said guide elements engage said guide rail." Buchko' s 7 system 100 includes guide rails 272 that engage slots 270 in the platen guide 8 blocks 268 to restrain transverse movement of the chain and the bags carried 9 by the platens 108. (See Buchko, col. 8, 11. 10-19 & Figs. 14 & 16; see also 10 App. Br. Req'r 14). 11 12 Response to Argument 13 The Patent Owner's arguments do not distinguish between the 14 language of claim 1, claim 21 and claim 23. (See Resp. Br. PO 9-10 and 15 21 ). The Examiner finds that Buchko does not anticipate claim 1, claim 21 16 or claim 23 because: 1 7 Buchko does not show a guide rail for links on a chain. In 18 Buchko, the guide elements are attached to a platen that is 19 affixed to the drive belt. These guide elements on the platen 20 engage guide rails. However, there is no teaching in Buchko of 21 the rigid links having guide elements engaging a guide rail. 22 Buchko also fails to show clamping units for engaging a 14 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 packaging film. 4 2 (RAN 19-20). The Patent Owner echoes these findings in its Respondent 3 Brief. (See Resp. Br. PO 17). The Patent Owner's argument turns on the 4 scope and meaning of the term "rigid chain link." 5 The Patent Owner does not identify any formal definition or clear 6 disclaimer in the written description of the '614 patent that might limit the 7 scope of the term "rigid chain link" so as to exclude the rigid body 8 combining a clamp 220 and a corresponding platen 108 described by 9 Buchko. Neither does the Patent Owner provide evidence of any specialized 10 usage of the term "rigid chain link," or even of the word "link," in the 11 pertinent art. (See Reb. Br. Req'r 7 (pointing that the Patent Owner "has 12 never proposed any formal claim construction to this effect and cites no 13 evidence supporting this construction"). A traditional definition of a "chain" 14 denotes a "flexible series of metal links or rings fitted into one another." 15 (l\!IcGRAW-HILL UICTIONARY OF ENG'RING (l\!IcGraw-Hill Cos., New York, 16 2nd edition 2003) ("chain," Design Eng'ring, def. 1)). Reacting to this 17 traditional usage, more recent general purpose dictionaries have defined 18 "link" as, for example, "a section of something resembling a chain." 4 The Examiner does not appear to explain the last sentence further. The Patent Owner in its Respondent Brief argues only that Buchko fails to describe clamping units included on the clamps 220 as opposed to the platens 108. (See, e.g., Resp. Br. PO 9-10 and 17; Reb. Br. Req'r 7). This argument is not persuasive, as discussed below. If prosecution is reopened under 37 C.F.R. § 41.77(b)(l), the Examiner may address whether one of Buchko's clamp and seal members 278, alone or in combination with the platen 108 bearing the reaction force applied to the clamp and seal member by the corresponding upper bag clamp member 710, is a "clamping unit" as that term is used in the claims. 15 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 (WEBSTER'S NEW WORLD COLLEGE DICTIONARY (Wiley Publ'g, Inc., 2 Cleveland, 4th edition 2010) ("link," entry 1, def. 2a)). Although the '614 3 patent describes particular chains, the Patent Owner does not point out any 4 disclosure in the '614 patent inconsistent with a broad reading of "rigid 5 chain link." 6 Claims 1, 21, and 23 recite that at least some of the rigid chain links 7 "include a clamping unit." (Italics added for emphasis.) This recitation 8 implies that the term rigid chain links reads on the combination of the 9 structure connected to the flexible links; the clamping unit; and whatever 10 structure might be used to couple the structure connected to the flexible links 11 to the clamping unit. 12 Buchko describes rigid chain links, each such link taking the form of a 13 combination of a clamp 220 and a corresponding platen 108. The clamp 220 14 and the corresponding platen 108 are affixed to each other by fasteners so as 15 to form an integral, rigid body. (See, e.g., Buchko, col. 7, l. 63 - col. 8, l. 7 16 & Figs. 16 & 18). Nothing in either the '614 patent or the ordinary usage of 1 7 the term "rigid chain links" precludes the term reading on the combination 18 of a clamp 220 and a corresponding platen 108. (See Reb. Br. Req'r 7 19 (arguing that "the Buchko platen 108 is a 'rigid link' according to claims 1, 20 21 and 23")). The corresponding platen includes a clamping unit taking the 21 form of a clamp and seal member 2 7 8; and guide elements taking the form 22 of platen guide blocks 268. Therefore, Buchko describes rigid chain links 23 including both clamping units as recited in claims 1, 21 and 23; guide 24 elements as recited in claims 1 and 23; and downwardly extending legs as 25 recited in claim 21. (See Reb. Br. Req'r 7-9). On this basis, we reverse the 16 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Examiner's decision not to reject claims 1, 21and23 under§ 102(e) as 2 anticipated by Buchko. 3 Because we reverse the Examiner's decision not to reject claims 1, 21 4 and 23 as anticipated by Buchko, we need not reach the issue whether the 5 subject matter of one or more of these claims would have been obvious from 6 the teachings of Buchko in combination with the teachings of one or more 7 other prior art references. There is, in fact, good reason not to reach these 8 proposed rejections in this appeal. Under the circumstances of the present 9 appeal, the anticipatory teachings of Buchko alone may provide an adequate 10 factual underpinning to conclude that the subject matter of claims 1, 21 and 11 23 would have been obvious from Buchko and the cited secondary 12 reference. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). (See Reb. 13 Br. Req'r 10-11). On the other hand, as discussed in greater detail in the 14 following section of this opinion, the Examiner correctly finds that the 15 Requester has not suggested a persuasive reason why one of ordinary skill in 16 the art might have modified Buchko' s machine in view of the teachings of 17 the cited secondary references so as to yield the subject matter of claim 1, 18 claim 21 or claim 23. Entering new grounds of rejection under § 103 (a) on 19 the same factual basis as the rejection under § 102( e) would multiply the 20 issues to be resolve in this reexamination proceeding without providing the 21 Requester any significant additional opportunity to be heard as to 22 patentability. 17 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 OBVIOUSNESS 2 The Requester relies only on Buchko or Spada as a primary reference 3 in each of the obviousness rejections listed on pages 9 and 10 of its Appeal 4 Brief. Buchko describes a system 100 in which the plastic film plies at the 5 open ends of bags pre-filled with comestibles are clamped, heat-sealed and 6 trimmed within an evacuated space. (See Buchko, col. 16, 11. 16-24; col. 17, 7 11. 22-28; col. 18, 11. 43-50; & Figs. 41-43). Spada describes a machine for 8 forming ordered groups of cigarettes. Another machine subsequently wraps 9 the groups of cigarettes in packaging sheets. (See Spada, col. 2, 11. 62-67). 10 Neither Buchko nor Spada teaches the conveyance or use of continuous 11 webs or sheets of plastic film. 12 Of the two secondary references listed on pages 9 and 10 of the 13 Requester's Appeal Brief, Natterer describes a web feeding means 6 for use 14 in a packaging machine. (See Natterer, col. 1, 11. 7-19 & col. 2, 11. 29-36). 15 The feeding means 6 includes a pair of parallel feeding chains 8, 9 running 16 on sprocket wheels 10, 11. (See Natterer, col. 2, 11. 45-50 & Fig. 2). Each 17 link of the two chains 8, 9 includes a clamp 12 for gripping a transverse edge 18 of a material web 4 and transporting the web parallel to the lengths of the 19 chains. (Natterer, col. 1, 11. 7-19; col. 2, 11. 37-44 & 51-53; & Fig. 4). 20 Hamilton describes a machine designed for making hermetically 21 sealed and evacuated packages from a pair of continuous webs of flexible 22 plastic packaging material. (Hamilton, col. 1, 11. 13-28 (Abstract)). 23 Hamilton's machine includes a pair of side-by-side endless chains 26 24 mounted on sprockets 22, 24. (See Hamilton, col. 2, 11. 28-32 & Fig. 2). As 25 depicted in Figures 5 and 6 of Hamilton, each link of the two chains 26 26 mounts a spring loaded clip 36. The clips grip transverse edges of flexible 18 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 plastic packaging film drawn from a roll 28 and transport the film parallel to 2 the length of the chains 26 toward packaging stations in the machine. (See 3 Hamilton, col. 2, 11. 41--47 & Figs. 2-6). 4 At pages 24 and 25 of its Brief, the Requester says that "it would have 5 been obvious to a person of skill in the art to substitute a sheet of packaging 6 film in lieu of preformed packaging bags or receptacles," but does not 7 explain why. Elsewhere, the Requester argues that: 8 A person of ordinary skill in the art would [have been] 9 motivated to combine the teachings of Spada and Natterer. The 10 methods to combine these mechanical devices [were] well 11 known and [would have] yield[ ed] predictable results. See, e.g., 12 MPEP 2243.A. Both Spada and Natterer are packaging 13 machines using different kinds of chains, and Buchko teaches 14 that a traction element chain as in Spada is a replacement for 15 conventional chains (i.e., as used by Natterer). See Buchko at 16 1:17--45, Buchko Provisional p. 6 11. 1-2, p. 7 11. 3--4 17 (discussing substitution of one for the other). It would [have 18 been] a simple substitution for a person of ordinary skill in the 19 art to [have] add[ed] Natterer's clamping units to Spada's rigid 20 links (clamps and housing units), with predictable results. See, 21 e.g., MPEP 2243.B. Similarly, Natterer's guide elements could 22 simply [have been] substituted beneath Spada' s clamps and 23 housing units. Id. 24 (See App. Br. Req'r 40). The Requester makes similar arguments regarding 25 the combination of Buchko and Natterer at page 26 of its Appeal Brief; and 26 regarding the combination of Buchko and Hamilton at pages 35 and 36 of its 27 Appeal Brief. (See also Reb. Br. Req'r 16). The argument is not persuasive. 28 As the Patent Owner correctly points out, one of ordinary skill in the 29 art would not have had reason to merely substitute clamps of the type 30 described by Natterer or Hamilton for Buchko's clamp and seal member 31 278. (See Resp. Br. PO 22-23 & 26). Buchko's clamp and seal member 19 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 2 7 8 acts as an anvil against which an upper bag clamp member 710 mounted 2 within the evacuated space presses to clamp the open end of a pre-filled bag 3 in place for heat sealing. (See Buchko, col. 17, 11. 22-28 & Fig. 41). If one 4 were to have substituted the clamps described by Natterer or Hamilton for 5 the clamp and seal members 2 7 8, Buchko' s upper bag clamp member 710 6 would not have properly engaged the substituted clamp to secure the open 7 end of the pre-filled bag in place on the platen 108 for heat sealing and 8 trimming. 9 Instead of a mere substitution of one known clamping unit for another, 10 the proposed replacement would have required one of ordinary skill in the 11 art to further modify the platens 108 and the evacuation chambers 106a, 12 106b, 106c ofBuchko's system 100 to provide either for clamping 13 engagement of the upper bag clamp member 710 against the substituted 14 clamp; or a mechanism to open and close the substituted clamp. The 15 Requester has not provided a persuasive reason why one of ordinary skill in 16 the art might have undertaken the substitution in view of the further 1 7 modification required for implementation. This is particularly true in view 18 of the different functions carried out by the described clamps, namely, 19 immobilizing the film plies at the open end of a bag for heat sealing and 20 trimming, in the case of Buchko's clamp and seal member 278; and 21 conveying a continuous web of film material through a packaging machine, 22 in the case of N atterer and Hamilton. The Requester does not persuade us 23 that it would have been obvious to modify Buchko' s system 100 in view of 24 the teachings of N atterer or Hamilton. 25 One of ordinary skill in the art could not merely have substituted a 26 clamp of the type described by Natterer or Hamilton for a clamp taught by 20 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Spada because Spada does not describe any clamping units. Furthermore, 2 the Requester suggests no persuasive reason why one of ordinary skill in the 3 art would have attempted to modify Spada' s machine to combine the 4 functions of grouping and wrapping the cigarettes (see Reb. Br. Req'r 22- 5 23). Spada describes a single packaging machine including separate 6 mechanisms for grouping and wrapping the cigarettes. The Requester has 7 not suggested a persuasive reason why one of ordinary skill in the art would 8 have undertaken the redesign necessary to combine the two functions in one 9 mechanism. 10 On pages 29 and 30 of its Respondent Brief, the Patent Owner 11 identifies design problems that might result from attempting to impose 12 clamps of the type described by Natterer or Hamilton on Spada conveyor 13 belt 3. The Requester has not suggested a persuasive reason why one of 14 ordinary skill in the art would have wished to undertake the modification 15 necessary to make the proposed "substitution." The Requester does not 16 persuade us that it would have been obvious to modify Buchko' s system 100 17 in view of the teachings ofNatterer or Hamilton. 18 Each of the tertiary references, Webster, Petershack, Case, Casgrain 19 and St. Louis, describes a belt, band or chain. The Requester does not argue 20 that any of the tertiary references describes a chain specifically designed for 21 a food packaging machine, however. (See generally App. Br. PO 17-19). 22 As such, none of these references would have provided one of ordinary skill 23 in the art reason to modify Buchko' s system 100 or Spada' s conveyor belt 3 24 in view of the teachings of these references. Likewise, the Requester's 25 proposal to use any one or more of Weisgerber; Frenker-Hackfort; 26 Strickland or W olfelsperger to teach a guide element (see, e.g., App. Br. 21 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Req'r 37-38) does not remedy the deficiencies in the combined teachings of 2 the primary and secondary references. 3 The Requester does not argue in this appeal that claims 5-7 and 24 are 4 anticipated by Buchko. We sustain the Examiner's decision not to adopt the 5 proposed rejections of dependent claims 5-7 and 24 under§ 103(a) as being 6 unpatentable over Buchko in view of either Natterer or Hamilton; alone or 7 further in view of either Webster, Petershack, Case, Casgrain or St. Louis; 8 once again, alone or even further in view of Weisgerber; Frenker-Hackfort; 9 Strickland or W olfelsperger, based on the pendency of claims 5-7 from 10 claim 1 and the pendency of claim 24 from claim 23. (See Resp. Br. PO 32- 11 33). We also sustain the Examiner's decision not to adopt the proposed 12 rejections of independent claims 1, 5-7, 21, 23 and 24 under§ 103(a) as 13 being unpatentable over Spada (US 5,564,556, issued Oct. 15, 1996) in view 14 of either Natterer or Hamilton; alone or further in view of either Webster, 15 Petershack, Case, Casgrain or St. Louis; once again, alone or even further in 16 view of Weisgerber; Frenker-Hackfort; Strickland or Wolfelsperger. 17 18 INDEFINITENESS 19 We sustain the Examiner's decision not to reject claims 23 and 24 20 under the second paragraph of pre-AIA 35 U.S.C. § 112. Claim 23 recites a 21 "packaging machine having a chain for transporting a food packaging film, 22 ... the food packaging machine having a guide rail wherein said guide 23 elements engage said guide rail." (Italics added for emphasis.) The 24 Requester argues that claim 23 (and, by way of dependency, claim 24) is 25 indefinite because the italicized term lacks antecedent basis. Lack of 26 antecedent basis is not, in and of itself, a basis for concluding that a claim is 22 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 indefinite. (See App. Br. Req'r 43). Instead, lack of antecedent basis must 2 be taken into account in determining whether one of ordinary skill in the art 3 would have been able to determine the scope of the claim with reasonable 4 precision. See Energizer Holdings, Inc. v. International Trade Comm 'n, 435 5 F.3d 1366, 1369-70 (Fed. Cir. 2006). The Examiner correctly concludes 6 that one of ordinary skill in the art reading claim 23 would have recognized 7 that the term "food packaging machine" recited in the body of the claim 8 referred back to the "packaging machine having a chain for transporting a 9 food packaging film" recited in the preamble. (See RAN 18). Therefore, we 10 sustain the Examiner's decision not to reject claims 23 and 24 under § 112, 11 second paragraph, as indefinite. 12 13 WRITTEN DESCRIPTION 14 Claim 23 recites "wherein the chain comprises a continuous flexible 15 traction element and the rigid chain links are clamped on the continuous 16 flexible traction element." The written description of the '614 patent states 17 that "[f]urther embodiments, e.g. resulting from the rigid chain links being 18 clamped on a continuous traction element, are likewise conceivable." (' 614 19 patent, col. 2, 11. 55-64). The Requester argues that the quoted recitation of 20 claim 23 lacks written description support because the clamping units 9, the 21 only clamps described in detail in the '614 patent, are not designed to clamp 22 a rigid chain link to a continuous flexible traction element. (See App. Br. 23 Req'r 43--44). 24 The test for compliance with the written description requirement is 25 "whether the disclosure of the application relied upon reasonably conveys to 26 those skilled in the art that the inventor had possession of the claimed 23 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 subject matter as of the filing date." Ariad Pharmas., Inc. v. Eli Lilly & Co., 2 598 F.3d 1336, 1351 (Fed. Cir. 2010). The quoted passage from column 2 3 of the '614 patent would have indicated to one of ordinary skill in the art that 4 the named inventors had possession of a packaging machine satisfying the 5 quoted limitation as of the filing date. The failure to specifically describe a 6 clamp designed to clamp a rigid chain link to a continuous flexible traction 7 element goes to the question whether the description was sufficient to enable 8 one of ordinary skill in the art to make the subject matter of claim 23, not to 9 whether the named inventors had possession of the claimed subject matter. 10 Therefore, we sustain the Examiner's decision not to reject claims 23 and 24 11 under§ 112, first paragraph for lack of written description. 12 13 DECISION 14 We REVERSE the Examiner's decision not to reject claims 1, 21 and 15 23 under§ 102(e) as being anticipated by Buchko. We do not reach the 16 proposed rejections of claims 1, 21 and23 under§ 103(a) as being 17 unpatentable over Buchko in view of either Natterer or Hamilton; alone or 18 further in view of either Webster, Petershack, Case, Casgrain or St. Louis; 19 once again, alone or even further in view of Weisgerber; Frenker-Hackfort; 20 Strickland or W olfelsperger. 21 We AFFIRM the Examiner's decision not to reject claims 1, 5-7, 21, 22 23 and 24 on the remaining grounds listed on pages 9-10 of the Requester's 23 Appeal Brief. 24 In summary, we AFFIRM the Examiner's decision not to reject 25 dependent claims 5-7 and 24; and REVERSE the Examiner's decision not to 26 reject independent claims 1, 21 and 23. 24 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Pursuant to 37 C.F.R. § 41.77(b), we enter new grounds of rejection 2 against independent claims 1, 21and23 under pre-AIA 35 U.S.C. § 102(e) 3 as being anticipated by Buchko (US 7,575,114 B2, issued Aug. 18, 2009). 4 This decision contains new grounds of rejection pursuant to 37 C.F.R. 5 § 41. 77 (b ), which provides that " [a ]ny decision which includes a new 6 ground of rejection pursuant to this paragraph shall not be considered final 7 for judicial review." Correspondingly, no portion of the decision is final for 8 purposes of judicial review. The Patent Owner or the Requester may request 9 rehearing under 37 C.F.R. § 41.79, if appropriate; however, the Board may 10 elect to defer issuing any decision on such request for rehearing until such 11 time that a final decision on appeal has been issued by the Board. 12 For further guidance on new grounds of rejection, see 37 C.F.R. 13 § 41. 77 (b )-(g). The decision may become final after it has returned to the 14 Board. 37 C.F.R. § 41.77(f). 15 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHfN 16 ONE MONTH FROM THE DATE OF THE DECISION, must exercise one 17 of the following two options with respect to the new grounds of rejection to 18 avoid termination of the appeal as to the rejected claims: 19 ( 1) Reopen prosecution. The owner may file 20 a response requesting reopening of prosecution 21 before the examiner. Such a response must be 22 either an amendment of the claims so rejected or 23 new evidence relating to the claims so rejected, or 24 both. 25 (2) Request rehearing. The owner may 26 request that the proceeding be reheard under 27 § 41. 79 by the Board upon the same record. 25 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 Any request to reopen prosecution before the examiner under 2 37 C.F.R. § 41.77(b)(l) shall be limited in scope to the "claims so rejected." 3 Accordingly, a request to reopen prosecution is limited to issues raised by 4 the new ground(s) of rejection entered by the Board. A request to reopen 5 prosecution that includes issues other than those raised by the new ground( s) 6 is unlikely to be granted. Furthermore, should the Patent Owner seek to 7 substitute claims, there is a presumption that only one substitute claim would 8 be needed to replace a cancelled claim. Any claim amendments should 9 comply with the requirements of pre-AIA 35 U.S.C. § 112. 10 The Requester may file comments in reply to a Patent Owner 11 response. 37 C.F.R. § 41.77(c). The Requester's comments under 37 C.F.R. 12 § 41.77(c) shall be limited in scope to the issues raised by the Board's 13 opinion reflecting its decision to reject the claims and the patent owner's 14 response under paragraph 37 C.F.R. § 41.77(b)(l). A newly proposed 15 rejection is not permitted as a matter of right. A newly proposed rejection 16 may be appropriate if it is presented to address an amendment and/or new 1 7 evidence properly submitted by the patent owner, and is presented with a 18 brief explanation as to why the newly proposed rejection is now necessary 19 and why it could not have been presented earlier. 20 Compliance with the page limits pursuant to 37 C.F.R. § l.943(b), for 21 all Patent Owner responses and Requester comments, is required. 22 The Examiner, after the Board's entry of a Patent Owner response and 23 Requester comments, will issue a determination under 37 C.F.R. § 41.77(d) 24 as to whether the Board's rejection is maintained or has been overcome. 25 The proceeding will then be returned to the Board together with any 26 comments and reply submitted by the owner and/or requester under 37 26 Appeal2015-008274 Reexamination Control 95/002,200 and 90/012,374 Patent US 7,922,614 B2 1 C.F .R. § 41. 77 ( e) for reconsideration and issuance of a new decision by the 2 Board as provided by 37 C.F.R. § 41.77(f). 3 4 AFFIRMED-IN-PART;§ 41.77(b) PATENT OWNER: HUSCH BLACKWELL LLP 4801 Main Street Suite 1000 KANSAS CITY, MO 64112 THIRD PARTY REQUESTER: DECHERTLLP P.O. 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